Trials@uspto.gov
`$71-272-7822
`
`Paper 8
`Date: February 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`Vv.
`
`COMMWORKSSOLUTIONS, LLC,
`Patent Owner.
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Before JENNIFER MEYER CHAGNON,KEVIN C. TROCK,and
`JOHN R. KENNY,Administrative Patent Judges.
`
`CHAGNON,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. $ 314
`
`
`$71-272-7822
`
`Paper 8
`Date: February 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`Vv.
`
`COMMWORKSSOLUTIONS, LLC,
`Patent Owner.
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Before JENNIFER MEYER CHAGNON,KEVIN C. TROCK,and
`JOHN R. KENNY,Administrative Patent Judges.
`
`CHAGNON,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. $ 314
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`I.
`
`INTRODUCTION
`
`Unified Patents, LLC (‘Petitioner’)' filed a Petition requesting inter
`
`partes review of claims 1-6, 9-13, and 16—20 (“the challenged claims”) of
`
`U.S.Patent No. 8,923,846 B2 (Ex. 1001, “the °846 patent’). Paper 1
`(‘“Pet.”). CommWorksSolutions, LLC (“Patent Owner’)?filed a
`
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`Wehave authority to determine whetherto institute an inter partes
`
`review under 35 U.S.C. § 314, which provides that an inter partes review
`
`maybeinstituted only upon a showing that “there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims
`
`challengedin the petition.” 35 U.S.C. § 314(a). Moreover, if the Board
`
`institutes a trial, the Board will institute on all challenges raised in the
`petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355-56 (2018)
`(“SAS’’) (holding that a decision to institute under 35 U.S.C. § 314 may not
`
`institute review on fewer than all claims challenged in the petition); see also
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov.
`
`2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`
`(“CTPG”) (“The Board will not institute on fewer than all claimsorall
`
`challengesin a petition.”).
`
`Applying those standards, and upon consideration of the information
`
`presented in the Petition and the Preliminary Response, as well as the
`
`evidence of record, we determinethat Petitioner has demonstrated a
`
`reasonable likelihood of prevailing in showing the unpatentability of at least
`
`! Petitioner states that Unified Patents, LLC is the real party-in-interest in
`this proceeding. Pet. 62.
`2 Patent Owneralso identifies Brainbox Innovations, LLC asa real party-in-
`interest to this proceeding. Paper4, 1.
`
`2
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`one of the challenged claims. Accordingly, we institute an inter partes
`
`review ofall challenged claims of the ’846 patent, based on all grounds
`
`identified in the Petition.
`
`The following findings of fact and conclusions of law are notfinal,
`but are made for the sole purpose of determining whether Petitioner meets
`the threshold forinitiating review. Any final decision shall be based on the
`full trial record, including any response timely filed by Patent Owner. Any
`arguments not raised by Patent Ownerin a timely-filed response may be
`
`deemed waived, even if they were presented in the Preliminary Response.
`
`A.
`
`Related Proceeding
`
`The parties identify CommWorks Solutions, LLC v. Comcast Cable
`
`Communications, LLC, Case No. 6:21-cv-00366-ADA (W.D. Tex.) as a
`
`related matter involving the °846 patent. Pet. 62; Paper4,1.
`
`B.
`
`The ’846 Patent
`
`The °846 patent, titled “Recovery Techniques in Mobile Networks,”
`
`wasfiled on October 21, 2013,° and issued on December30, 2014.
`
`Ex. 1001, codes (22), (45), (54). Embodiments ofthe ’846 patentrelate to
`
`“technique[s] for recovering location information of a subscriber in a mobile
`network.” Id. at 1:54-2:16; see also id. at code (57) (“A technique for
`
`3 The °846 patent claimspriority, through a series of continuation
`applications and a divisional application, to application No. 09/802,861,
`filed on March 12, 2001. Ex. 1001, code (60). The specific priority date of
`the challenged claimsis not at issue in this proceeding, and we need not
`make any determination in this regard for purposes of this Decision.
`
`3
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`protecting location information of a subscriber in a mobile networkis .
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`disclosed.”).
`The ’846 patent explains that “Mobile IPv6"! allows a subscriberto
`
`movefrom onelink to another without changing its IP address.” Jd. at
`
`3:11-12. “While a subscriber is attached to some foreign link away from
`
`home,it is also addressable by one of more care-of-addresses, in addition to
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`its home address.” Jd. at 3:30—32. The °846 patent describes that a “care-of
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`address is an IP address associated with a mobile node while the subscriber
`
`is visiting a particular foreign link.” Jd. at 3:30-34. For this to work, “a
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`mobile subscriber registers one ofits care-of addresses with a router onits
`
`homelink, requesting this router to function as the ‘home agent.’” Jd. at
`
`3:49-51. The homeagentthen “intercept[s] any IPv6 packets addressed to
`
`the subscribers’ home address (or home addresses) on the homelink and
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`tunnels each intercepted packet to the subscribers’ primary care-of address.”
`
`Id. at 3:59-62.
`
`The ’846 patent “relates to protecting the Transport Address (TA)
`
`whichis a current Care of Address of a mobile subscriber is reachable from
`
`loss and after Call State Control Function (CSCF)crashesandafter reset
`
`situations of a network elementrealizing CSCF functionality.” Jd. at
`
`1:22-27. The ’846 patent describes embodiments in the context of a 3G
`
`All-IP mobile network. See id. at 6:22—26. In a 3G All-IP network,the
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`“S-CSCE[servicing-CSCF] that the subscriber is currently registered to and
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`the TA of the roaming subscriber .
`
`.
`
`. must be known to and maintained by
`
`the network.” Jd. at 2:63-67. Specifically, “[k]eeping the address of the
`
`S-CSCEensuresthat a call to a subscriber can be routed to the destination
`
`4 Internet Protocol Version 6. See Ex. 1001, 4:30-31.
`
`4
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`Patent 8,923,846 B2
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`node,” and “[k]eeping the current TA of the subscriber ensuresthat a call
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`madeto the subscriber which arrives at the S-CSCFcanfinally reach the
`
`subscriber.” Jd. at 3:66—4:3. But, “the information of the current S-CSCF
`(stored in the HSS [HomeSubscriber Service]) is insufficient to reach the
`
`subscriber uponthe loss of the subscriber TA.” Jd. at 4:15-17. The ’846
`
`patent proposes several options to remedy this problem, including that “[t]he
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`TA of the subscriber should be forwarded to the HSS at registration and
`
`downloaded from the HSS to the S-CSCF during recovery.” Jd. at 4:27—29.
`
`Figure 4A of the ’846 patent, reproduced below,illustrates an
`
`embodimentfor “sending subscriber TA to S-CSCF and then forwardingit
`
`to HSSat registration” (id. at 2:39-40):
`
`FIG. 4A
`
`
`
`1. INCOMING CALL
`Po
`
`
`
`
`2. LOOK UP FOR TA & DATA OF CALLED SUBSCRIBERFAILS
`
`
`Po
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`3, RESTORE TA & DATA FROM HSS TO S-CSCF
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` 4, CALL TO SUBSCRIBER ROUTED BY RECOVERED TA
`
`In the embodiment shown in Figure 4A above, ““‘a safe copy’ of the
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`subscriber’s TA is forwarded to the HSS for storage and protection”so that
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`“(t]he TA and other data can then be restored to the S-CSCF upontheearlier
`
`loss of data by the S-CSCF.” Jd. at 4:37—42. In particular, in step 1, “[aJn
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`
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`IPR2021-01297
`Patent 8,923,846 B2
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`incomingcall from an REP (Remote End-Point) is received by the S-CSCF.”
`
`Id. at 4:43-45. “In step 2, the S-CSCF looksfor the subscriber’s TA so as to
`
`route the call but fails to find the subscriber’s TA.” Jd. at 4:45-46. The
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`S-CSCFtheninitiates restoration of the TA in step 3, and the call is routed
`
`to the subscriber using the recovered TA in step 4. Id. at 4:46—-51.
`
`C.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1, 9, and 16 are independent.
`
`Claims 2—6 depend from claim 1; claims 10—13 depend from claim 9; and
`
`claims 17—20 depend from claim 16. Independent claim 1 of the 846 patent
`
`is reproduced below,andis illustrative of the challenged claims.
`
`1.
`
`A method comprising:
`
`receiving, fromafirst server at a second server, a transport
`address and an addressofthe first server;
`
`receiving, at the second server, a request from the first
`server to restore the transport address; and
`
`in response to the request from the first server to restore
`the transport address, communicating the transport addressto the
`first server from the second server.
`
`Ex. 1001, 6:31-38.
`
`
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`IPR2021-01297
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`D._The Applied References
`
`Petitioner relies on the following references in the asserted grounds.
`
`Pet. 8.
`
`Issue Date/
`as
`.
`Reference Publication Date|E*Bibit
`
`
`
`U.S. Patent No. 6,788,936 B1 (“Rune”)
`
`Sept. 7, 2004°
`
`Ex. 1003
`
`oe
`
`
`
`European Telecommunications Standards
`Institute, Digital cellular
`telecommunications system (Phase 2+);
`Mobile Application Part (MAP)
`specification (GSM 09.02) (version 5.3.0)
`(“ETSI”)
`
`
`6
`
`Aug. 1996
`
`Ex. 1004
`
`U.S. Patent No. 6,61 1,516 B1 (“Pirkola”)|Aug. 26, 20037 Ex. 1005
`
`Petitioner also relies on the Declaration of Zygmunt J. Haas, Ph.D.
`(Ex. 1008) to support its positions.
`
`> Rune wasfiled on April 12, 2000, and is prior art to the challenged claims
`at least under 35 U.S.C. § 102(e). See Ex. 1003, code (22); Pet. 11.
`6 Petitioner submits the Declaration of Sylvia D. Hall-Ellis, Ph.D. attesting
`that ETSI was publicly available as of August 1996. Pet. 14—16 (citing
`Ex. 1006 §§ 22-31). Petitioner contends ETSI is prior art to the challenged
`claims at least under 35 U.S.C. §§ 102(a), (b). Pet. 14. As this stage of the
`proceeding, Patent Ownerdoes not challenge the status ofthis reference as
`prior art. See generally Prelim. Resp. Based on the record now before us,
`Petitioner has madea sufficient showing that ETSI qualifies as a priorart
`printed publication. See Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential).
`’ Pirkola wasfiled on June 21, 1999, andis prior art to the challenged claims
`at least under 35 U.S.C. § 102(e). See Ex. 1005, code (22); Pet. 35.
`
`7
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`E.
`
`The Asserted Grounds
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`Petitioner sets forth its challenges to claims 1-6, 9-13, and 16—20 on
`
`the following grounds. Pet. 8.
`
`35 U.S.C. §|Reference(s)
`
`
`Claim(s) Challenged
`
`1-5, 9-12, 16-19
`
`Rune, ETSI
`
`1, 4-6, 9, 12, 13, 16, 19, 20
`
`103
`
`Pirkola, Rune, ETSI
`
`Tl.
`
`ANALYSIS
`
`A.
`
`Legal Standards
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challengesis
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity .
`.
`. the evidence that supports the
`groundsfor the challenge to each claim”)). This burden ofpersuasion never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`
`inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`8 Becausethe application leading to the ’846 patent has an earliest effective
`filing date before March 16, 2013, patentability is governed by the version
`of 35 U.S.C. §§ 102 and 103 preceding the Leahy-Smith America Invents
`Act (“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011).
`
`8
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`Patent 8,923,846 B2
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content ofthe priorart;
`
`(2) any differences between the claimed subject matter and the priorart;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness.’ Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`An obviousness analysis “need not seek out precise teachings directed to the
`
`specific subject matter of the challenged claim, for a court can take account
`
`of the inferences and creative steps that a person ofordinary skill in the art
`
`would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner cannotsatisfy its
`
`burden of proving obviousness by employing “mere conclusory statements.”
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Instead, Petitioner must articulate a reason why a person ofordinary skill in
`the art would have combinedtheprior art references. Jn re NuVasive,
`842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`Weanalyze the asserted grounds of unpatentability in accordance with
`
`these principles to determine whether Petitioner has met its burden to
`
`establish a reasonable likelihood of success attrial.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Wereview the grounds of unpatentability in view of the
`
`understanding of a person of ordinary skill in the art at the time ofthe
`
`invention. Graham, 383 U.S. at 17. Petitioner contends that a person
`
`® At this stage of the proceeding,the parties have not asserted or otherwise
`directed our attention to any objective evidence of non-obviousness.
`
`1
`
`9
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`
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`having ordinary skill in the art would havehad “(1) an undergraduate degree
`in electrical engineering or closely related scientific field, such as computer
`
`engineering, or similar post-undergraduate education; and (2) at least two
`
`years of experience in mobile telecommunications, with more education
`
`substituting for less experience and vice versa.” Pet. 5—6 (citing Ex. 1008
`
`qj 30-32).
`
`At this stage of the proceeding, Patent Ownerdoesnot contest
`
`Petitioner’s definition of a person of ordinary skill in the art. See generally
`
`Prelim. Resp.
`
`Based on the current record and for the purposes of this Decision, we
`
`adopt Petitioner’s proposed description of the person of ordinary skill in the
`
`art as it is supported by Dr. Haas’s testimony andis consistent with the ’846
`
`patent and the asserted priorart.
`
`C.
`
`Claim Construction
`
`Forthis inter partes review proceeding claim terms
`
`shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under
`35 U.S.C.
`[§]282(b),
`including construing the
`claim in
`accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.
`
`37 C.F.R. § 42.100(b) (2019). Further, “[a]ny prior claim construction
`
`determination concerning a term ofthe claim in a civil action, or a
`
`proceeding before the International Trade Commission,that is timely made
`
`of record in the inter partes review proceeding will be considered.” Id.
`
`Underthe standard set forth in Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
`
`10
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`customary meaning, as would have been understoodby a person of ordinary
`
`skill in the art at the time of the invention,in light of the language of the
`
`claims, the specification, and the prosecution history of record. See Thorner
`
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012).
`
`Only those claim termsthat are in controversy need to be construed, and
`
`only to the extent necessary to resolve the controversy. Nidec Motor Corp.
`
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017).
`
`For purposesof this Decision, we discuss the term “transport
`
`address.”
`
`Petitioner contends the term “transport address should be construed
`
`as the current address, other than its home address, through which the
`
`mobile subscriber can be reached, such as when a mobile subscriber has
`
`roamed outside of its home network.” Pet. 6; see Ex. 1001, 5:14-18 (“The
`
`subscriber .
`
`.
`
`. has provided its’ TA, that is, the current address where the
`
`subscriber is reachable. Such an addressis not the static home address but
`
`rather is the Care-of-Address.”).
`
`Patent Ownercontendsthat Petitioner’s “proposed construction omits
`
`that the transport address must be an IP address routable within an IP
`
`network.” Prelim. Resp. 4. Patent Owner proposes “a transport addressis
`
`‘an IP address associated with a mobile node while the subscriberis visiting
`
`a particular foreign link.’” Jd. Patent Owner arguesthat Petitioner’s
`
`proposed construction “ignores the ’846 patent’s definition that explicitly
`
`references the ‘IP address.’” Id. at 5.
`
`As Patent Ownercorrectly notes, the 846 patent describes that “the
`
`Transport Address (TA) .. . is a current Care of Address of a mobile
`
`11
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`subscriber.” Ex. 1001, 1:23-24; Prelim. Resp. 4. And, the °846 patent
`
`further describes that “[a] care-of address is an IP address associated with a
`
`mobile node while the subscriberis visiting a particular foreign link.”
`
`Ex. 1001, 3:32—34; Prelim. Resp.4.
`
`The ’846 patent also describes, however, that the “Care-of Address”is
`
`“part ofthe TA [Transport Address].” Ex. 1001, 4:32 (emphasis added);
`
`Pet. 7. And, claim 6, which depends from claim 1, further recites “wherein
`
`the transport address comprises a care-of-address of a mobile subscriber.”
`
`Ex. 1001, 6:48-49. Construing transport address to be limited to the
`
`care-of-address would render claim 6 superfluous. See Versa Corp. v.
`
`Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (“The doctrine of
`
`claim differentiation ‘create[s] a presumption that each claim in a patent has
`399
`
`a different scope.’”
`
`(quoting Comark Communications, Inc. v. Harris Corp.,
`
`156 F.3d 1182, 1187 (Fed.Cir.1998))). In other words, although we agree
`
`that the proper construction of transport address encompasses a
`
`care-of-address, we do not agree with Patent Ownerthatit is necessarily
`
`limited thereto. See Pet. 7 (“Consistent with the specification, this
`
`construction encompassesa care-of-address .. . .” (citing Ex. 1008 4 33));
`
`Prelim. Resp. 4—5; ¢f E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
`
`1369 (Fed. Cir. 2003) (“Interpretation of descriptive statements in a patent’s
`
`written description is a difficult task, as an inherent tension exists as to
`
`whethera statementis a clear lexicographic definition or a description ofa
`
`preferred embodiment. The problemisto interpret claims ‘in view of the
`
`specification’ without unnecessarily importing limitations from the
`
`specification into the claims.”).
`
`12
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`Patent Owneralso arguesthat Petitioner’s proposed construction
`“ignores the ’846 patent’s .
`.
`. repeated referencesto the problem—and
`identified solution—ofsuccessfully routing to a subscriber within ‘3G
`
`All-IP’ networks.” Prelim. Resp. 5. The 846 patent, however, expressly
`
`indicates that “the example embodiments of the present invention have been
`described with respect to currently used networks, such as [3G!°] All-IP
`
`mobile networks, and standards for simplicity. It is, of course, understood
`
`that the present invention is not limited thereto.” Ex. 1001, 6:22—27
`
`(emphasis added). At this stage of the proceeding, Patent Owner doesnot
`
`cite persuasive evidence supporting that a person ofordinary skill in the art
`
`would understand that the ordinary and customary meaning of“transport
`
`address”limits the claims to 3G All-IP networks. Based onthe record now
`before us, we are not persuaded that the claimsare clearly limited to 3G
`
`All-IP networks. See In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359,
`
`1369 (Fed. Cir. 2004) (“Wehave cautioned against reading limitations into a
`
`claim from the preferred embodiment described in the specification, even if
`
`it is the only embodiment described, absentclear disclaimerin the
`specification.”).
`
`Finally, Patent Owner argues that Petitioner “improperly suggests that
`
`language describing a specific embodimentapplies to the general use ofthe
`
`term transport address.” Prelim. Resp. 5. According to Patent Owner, the
`
`cited “portion of the ’846 patent relates to the three ‘assumptions’ made only
`
`for a specific ‘third option’ (i-e., embodiment) of the invention.” Jd. at 6.
`
`10 The patent here reads “313”; this appears to be a typographicalorprinting
`error.
`
`13
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`Petitioner’s proposed construction relies on the following description from
`
`the °846 patent:
`
`The subscriber is in an area assigned to an S-CSCF and has
`registered with it and has provided its TA, that is, the current
`address where the subscriber is reachable. Such an addressis not
`the static homeaddress but rather is the Care-of-Address.
`
`Ex. 1001, 5:14-18; Pet. 6. It is not clear from parsing this language,
`
`however, that the referenced assumption is the portion that describes the TA
`
`as the “current address wherethe subscriberis reachable”; rather, it is just as
`
`plausible that the assumption is that the “subscriberis in an area assigned to
`
`an S-CSCFandhasregistered with it and has provided its TA.” Further,
`
`describing the TA as the “current address where the subscriber is reachable”
`
`is consistent with other portions of the Specification (i.e., not limited to the
`
`“third option”) that describe the object of the invention generally as “a
`
`technique for recovering location information of a subscriber in a mobile
`
`network”to “protect[] against loss” of this information, such as the
`
`subscriber’s TA. See, e.g., Ex. 1001, 1:54-2:3; Pet. 6-7.
`
`At this stage of the proceeding and based on the record now before us,
`
`we are not persuaded by Patent Owner’s contention that the term “transport
`
`address” requires an IP address routable within an IP network. The panel
`
`invites the parties to further address the construction of this claim language
`
`during the trial.
`
`D.
`
`Overview of the Asserted References
`
`1.
`
`Rune (Ex. 1003)
`
`Runeistitled “Gateway Location Register Fault Recovery.”
`
`Ex. 1003, code (54). Rune “relates to mobile communications systems, and
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`14
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`morespecifically, to recovery of a gateway location register from a fault.”
`
`Id. at 1:36—-38. Figure 1 of Rune is reproduced below.
`
`Wm002~O~*}
`
`20
`
`FIG.1
`
`120
`
`Figure 1, above,“illustrates a wireless communication system in accordance
`with the Global System for Mobile communication (GSM)standard.” Jd. at
`1:39-41. Rune explains that, in the GSM standard, a “mobile subscriber
`
`typically has a subscription with a network whichis designated as the
`
`mobile subscriber’s home public land mobile network 110 (HPLMN).” Jd.
`
`at 1:45-48. The HPLMN 110 includes home location register 115 CHLR).
`
`Id. at 1:48-49. Runefurther explains that, when a mobile subscriberis
`
`roaming, the “visited public land mobile network 120 (VPLMN). . . requires
`
`certain data regarding the mobile subscriber’s subscription.” Jd. at 1:51—-54.
`
`“The mobile subscriber’s profile is transferred from the HLRtoavisitor
`
`location register (VLR) in the VPLMN,”(e.g., MSC/VLR 130 or 135). Jd.
`
`15
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`at 1:56—-58; see id. at 1:59-2:7. Runespecifies that “{t]he protocol used by
`
`GSM/UMSTSsystemsfor transferring data between VLRs and HLRsis the
`
`mobile applications part (MAP).” Jd. at 2:39-41.
`
`Figure 5 of Rune is reproduced below.
`
`520
`
`
`
`ViR
`
`
`VLR INITIATES MAP
`RECEIVED LOCATION
`UPDATE LOCATION
`
`
`UPDAIE FROM MOBILE
`PROCEDURE
`SUBSCRIBER?
`
`
`VLR DELETES IMSi RECORDS
`
`
`
`
`
`
`925
`
`VLR
`RECEIVED REQUEST
`FOR ROAMING
`NUMBER?
`
`530
`
`VLR SENDS MAP RESTORE
`DATA MESSAGE JO HLR
`
`
`
`
`
`
`HLR RESPONDS TO RESTORE
`DATA MESSAGE AND INITIATES
`INSERT SUBSCRIBER DATA
`PROCEDURE WITH VR
`
`
`535
`
`FIG.5
`
`Figure 5, above,illustrates “a conventional method in a GSM system when a
`
`VLRis recovering from a fault.” Jd. at 5:31-32. After a fault, in step 505,
`
`“the VLR, which does not have a non-volatile backup memoryforits
`
`dynamic subscriber data, deletes all [International Mobile Subscriber
`
`IdentityMSI] records which remain in its dynamic memory.” Jd. at
`
`16
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`3:11-14. The VLR waits for contact from a mobile subscriber or the HLR,
`
`and then “determines whetherit has received a location update request from
`
`a mobile subscriber,” in steps 510 and 515. Jd. at 3:14-18. Ifa location
`
`update requestis received, “the VLR initiates the
`
`MAP_UPDATE_LOCATIONprocedure with the HLRassociated with the
`
`mobile subscriber in accordance with step 520,” in order “to send data
`
`associated with a mobile subscriber from an HLR to a VLR.” Jd. at 3:18-25.
`
`If no location update requestis received, “the VLR determines whetherit
`
`has received a roaming numberrequest from an HLR in accordance with
`
`step 525.” Id. at 3:30-32. If no roaming request is received, the VLR will
`
`again wait for contact; but if a roaming requestis received, “the VLR sends
`
`a MAPRESTOREDATA message,including an indication of the
`
`concerned subscriber whose data is being restored, to the HLRindicating
`
`that the VLR has experienceda fault in accordance with step 530.” Jd. at
`
`3:38-42. “In response to the MAPRESTOREDATA message the HLR
`
`initiates the ... MAPINSERTSUBSCRIBERDATAprocedure,” which
`
`provides subscriber data to the VLR in step 535, Jd. at 3:42—-46.
`
`Rune“anticipate[s] that future versions of the GSM standard, also
`
`called Universal Mobile Telecommunications System (UTMS)will
`
`incorporate elements of other mobile communications systems.” Jd. at 2:9-
`
`12. For example, Rune describes an embodimentthat includes a gateway
`
`location register (GLR), which “is used to reduce internetwork signaling.”
`
`Id. at 2:12—15, 2:24-25. The GLR can behavetransparently by “using an
`
`HLRinterface towards the VLRs and a VLRinterface towards the HLRs.”
`
`Id. at 2:44-46. Rune presents a numberof exemplary fault recovery
`
`procedures for embodiments that include a GLR,acting in its capacity as an
`
`17
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`HLR,a VLR,or both. See, e.g., id. at 6:11-10:31. In these procedures,
`
`“Injeither the HLRs, nor the VLRsare affected, i.e., their behaviors do not
`
`have to be modified in order to cope with the GLR fault recovery
`
`procedure.” Jd. at 10:39-42.
`
`2.
`
`ETSI (Ex. 1004)
`
`ETSIistitled “Digital cellular telecommunications system (Phase 2+);
`
`Mobile Application Part (MAP) specification (GSM 09.02),” and is
`
`identified as version 5.3.0 of that specification. Ex. 1004, 1. ETSI states
`
`that MAP specifies “the requirements for the signaling system and
`
`procedureswithin the Digital cellular telecommunications system
`
`(Phase 2/Phase 2+) at application level.” Jd. at 19. In particular, ETSI notes
`
`thatit is “necessary to transfer between entities of a Public Land Mobile
`
`Network (PLMN)information specific to the PLMN in orderto deal with
`
`the specific behaviour of roaming mobile stations,” and thus “describes the
`
`requirements for the signaling system and the procedures neededat the
`
`application level in orderto fulfil{l] these signalling needs.” Jd. at 21.
`
`ETSIdescribes the configuration of the GSM networkandofspecific
`
`functions thereof. See, e.g., id. at 27 (describing the HLR and VLR); 299
`
`(describing the MAP_UPDATELOCATIONrequest); 104, 363-65, 371
`
`(describing VLR fault recovery procedures, including the
`
`MAPRESTOREDATA and MAP_INSERTSUBSCRIBERDATA
`
`functions).
`
`3.
`
`Pirkola (Ex. 1005)
`
`Pirkola is titled “Short Message Service Support Over a Packet-
`
`Switched Telephony Network.” Ex. 1005, code (54). Pirkolarelates to
`
`18
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`“‘a technique that allows subscribers to roam between an IP-telephony
`
`network and a cellular network.” Jd. at 1:21—23. Pirkola observes that in
`
`GSM a cellular subscriber can roam, but that “IP-telephony networks
`
`presently do not permit roaming or mobility within the IP-telephony
`
`network.” Jd. at 2:51-52, 3:25—26. Further, “cellular networks and
`
`IP-telephony networksare distinct and incompatible networks and do not
`
`allow for roaming between” them. Jd. at 3:27—29. Accordingly, Pirkola
`
`introduces a Mobile IP-Telephony Network (MIPTN) in which a “subscriber
`
`registers with a Visited Function where the subscriberis located” and “[t]he
`
`Visited Function then sends a messageto the subscriber’s MIPTN Home
`
`Function to provide updated subscriber location information.” Jd. at
`
`3:67-4:4. “Whena call is received that is intended for the subscriber, the IP
`address (or transport address) ofthe serving MIPTN Visited Function ...4S
`retrieved from the MIPTN HomeFunction,” and “[a]n IP-telephonycallis
`
`then set up toward the IP address of the serving MIPTN Visited Function.”
`
`Id. at 4:4-9.
`
`Pirkola describes an embodiment that supports roaming between an
`
`MIPTN and a cellular network by using a Gateway Function. Jd. at 4:10-13.
`
`In such case, “the subscriber’s Home Function and Visited Function will be
`located in different types of networks” and “the Gateway Function performs
`
`the interworking between the PSTN/cellular message formats and signaling
`
`and those in the MIPTN.” /d. at 4:14-21.
`
`.
`
`19
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Figure 2 of Pirkola, reproducedbelow,illustrates a system
`
`architecture:
`
`Aorlu pww~d
`
`TERMINAL
`
`FIG. 2
`
`CELLULAR NETWORK
`
`
`VR
`| SRN]
`MSC
`270
`CELLULAR VISITED FUNCTION
`
`
`
`
`
`
`CELLULAR HOME
`FUNCTION
`
`MIPTN
`
`FUNCTION
`
`[204
`
`
`FUNCTION
`
`
`
`— 208
`
`MOBILE IP-TELEPHONY
`
`NETWORK(MIPTN)
`
`902
`
`us
`(ISDN,
`
`
`212~~‘'WP,ete.) 220 TERMINAL
`
`
`PANY.
`
`Figure 2 shows MIPTN 202 and cellular network 260 with interfacing
`
`Gateway Function 210A. Jd. at 7:15-17. The Gateway Function stores
`
`“a dynamic correspondence or mapping betweena subscriberidentification
`
`and an addressof a Visited Function (in either the cellular network 260 or
`
`the MIPTN 202) where the subscriber has roamed(oris located).”” Jd. at
`
`7:23-29.
`
`20
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Figure 7 of Pirkola, reproduced below,illustrates a registration of a
`
`MIPTN subscriber.roaming in a cellular network:
`
`FIG. 7
`
`SERVING
`MSCIVLR
`
`CELLULAR
`VISITED
`
`.
`
`MIPTN HOME
`
`1. UPDATE LOC.(IMSI)
`
`
`
`FUNCITON
`GATEWAY
`[21 FUNCTION
`
`
`
`
`
`2. UPDATE LOC. (IMSI!, VLR#_E164
`
`3. UPDATE LOC. (IMSI, GW_TA)
`
`4. INSERT SUBSCR.DATA(S. DATA,IMSI}
`
`5, INSERT SUBSCR. DATA (S.DATA, IMSI
`
`
`
`Figure 7 shows,in step 1, that when an MIPTN 202 subscriber roamsto
`
`cellular network 260, “the subscriber terminal (MS) sends an update location
`message to the serving MSC 272/VLR270 in the cellular Visited Function
`274 in cellular network 260.” Jd. at 14:19-26. In step 2, serving VLR 270
`
`sends an update location messageas a cellular procedure, and in Step 3,
`
`Gateway Function 210 receives and translates the message from a cellular
`
`procedure to an MIPTN procedure, “which is sent along with the IP address
`of the Gateway Function 210 (GW_TA)to the subscriber’s Home Function.”
`Id. at 14:29-47. In step 4, Home Function 204 receives the update location
`
`message, stores the IP address (GW_TA), and then issues an insert
`
`subscriber data message back to Gateway Function 210, including the
`
`subscriber’s profile or data and IMSI. Jd. at 14:55—-63. In step 5, Gateway
`
`Function 210 sendsan insert subscriber data message as a cellular/PTSN
`
`procedure to serving VLR 270, which “then stores the subscriber profile
`
`corresponding to the IMSI.” Jd. at 14:64—-15:3.
`
`21
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`E.
`
`Asserted Obviousness over Rune and ETSI
`
`Petitioner asserts that claims 1-5, 9-12, and 16-19 would have been
`
`obvious over Rune and ETSI. Pet. 11-35. Petitioner supports these
`
`assertions with citations to the record and the testimony of Dr. Haas. Seeid.
`
`Patent Owner opposes, arguing that the asserted combination does not teach
`
`or suggest all the features of the challenged claims. See Prelim. Resp. 6—12.
`
`1.
`
`Independent Claim I
`
`a)
`
`Amethod comprising:
`
`Petitioner asserts that Rune teaches a method. Pet. 20 (citing
`
`Ex. 1003, 3:10-11). Rune discloses, in Figure 5, “a conventional method in
`
`- a GSM system when a VLRis recovering from a fault.” Ex. 1003, 3:10-11.
`
`Patent Ownerdoesnot present arguments regarding this limitation.
`
`See generally Prelim. Resp.
`
`Wedeterminethat, on the record now before us, Petitioner’s cited
`
`evidence sufficiently supports its contentions regarding the subject matter of
`
`the preamble.
`
`b)
`
`receiving, from afirst server at a second server, a
`transport address and an address ofthefirst server
`
`Petitioner asserts that the combination of Rune and ETSIteachesthis
`
`limitation. See Pet. 20-26.
`
`Petitioner relies on Rune’s wireless GSM network node comprising
`
`the VLR/MSCandthe node comprising the HLR,as respectively teaching
`the claimedfirst and secondservers. See Pet. 20-22; Ex. 1003, Fig. 1; see
`
`also Pet. 22 (noting that ETSI also “describ[es] the configuration of a GSM
`
`mobile network and the general functions of the HLR and VLR”(citing
`
`22
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Ex. 1004, 27-28)). Relying on the testimony of Dr. Haas, Petitioner
`
`contends that a person of ordinar
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